by Evoke Law | Feb 13, 2020 | Trademark topics, IP points, Evoke Law, International
BREXIT was finally implemented on January 31, 2020. What does this mean for your European Union (“EU”) trademark applications or registrations? Issued EU Registrations Will Automatically “Spawn” Parallel UK Registrations Good news! For EU trademark registrations granted by December 31, 2020, a parallel UK registration will automatically “spawn,” carrying over all the original information from the EU registration as well as the relevant filing, seniority, and priority dates to the newly issued UK registration. While the transition process has not yet been fully ironed-out, significantly, there will be no fees imposed for the conversion. Significantly, the UK government has recently confirmed that use in the remaining 27 EU countries within the five years before December 31, 2020 exit date, which would have supported the validity of an EU registration, will also support the validity of the spawned UK registration — even if the mark has never been used in the UK. However, if use continues only in the EU, with no actual use commencing in the UK, the spawned UK registration will become vulnerable to non-use revocation in 5 years, by December 31, 2025, because the EU use will be considered too distant and will no longer be relevant with respect to the spawned UK registration. We note that the examination process for EU trademark applications is relatively expeditiously (in part because the EU Intellectual Property Office (“EUIPO”) does not issue refusals based on likelihood of confusion, e.g., “relative rights”) in as little as 5 months from the date of filing to the date of registration (that is, if there are no Office actions or oppositions filed). So, there...
by Evoke Law | Dec 5, 2019 | Trademark topics, IP points, Evoke Law
The “strength” of a trademark relates to how likely a mark is to be remembered and associated in the public’s mind with the mark owner. The stronger a trademark, the greater protection it is accorded by trademark law. Conceptual Strength Conceptual trademark strength refers to the level of inherent distinctiveness of a mark. A mark can be inherently distinctive. (Alternatively, a mark may acquire distinctiveness through extensive and continuous use in the market.) During examination of a new application, the United States Patent and Trademark Office assess the conceptual strength of an applied-for mark to determine whether the mark is registrable. Being limited to the four corners of the application, the Office cannot consider commercial strength, unless the evidence is being presented in connection with a claim of secondary meaning. There are 3 types of inherently distinctive marks, discussed below in order of descending conceptual strength: – Fanciful marks are not actual words, but made-up terms, like ACCENTURE for consulting, EXXON for energy products, STARBUCKS for coffee, PINTEREST for social networking, and LEAFLY for cannabis news source and directory. Fanciful marks are the strongest type of mark because the commercial meaning is solely derived from the use by the trademark owner. – Arbitrary marks are real words, but words that have no literal, or even a suggestive, meaning in connection with the product. Examples include LEAPFROG for educational games, APPLE for computer products, AXE for men’s toiletries, JACK IN THE BOX for fast food, DAWN for cleaning products, and VOLCANO for a vaporizer. – Suggestive marks allude to and only indirectly relate to the product. Examples of suggestive marks...
by Evoke Law | Nov 8, 2019 | Trademark topics, IP points, Evoke Law
In our recent blog post, we discussed important characteristics of marks to be considered during the selection process. The selection of a distinctive mark is key to being able to successfully enforce rights in a brand name, and also has implications for registration. In the U.S., unlike most other countries, there are two Trademark Registries: the Principal and the Supplemental. The Principal Register is the primary trademark register maintained by the United States Patent and Trademark Office and is reserved for marks that are inherently distinctive, either fanciful, arbitrary, or suggestive, or for merely descriptive marks that have acquired distinctiveness through extensive continuous and exclusive use in the marketplace. If an applied-for mark is considered merely descriptive by the USPTO and use in commerce has commenced, an applicant has the option to register on the Supplemental Register. However, registration on the Supplemental Register is an admission that the mark is weak, and, thus, not entitled to a strong scope of protection. Having a mark registered on the Principal Register confers certain benefits, including: Use of the ® symbolAbility to bring a trademark infringement suit in federal court Nationwide constructive use and constructive notice, which cuts off rights of other users for similar marks. Meaning, all others are presumed to know about the ownership claim once the mark is registered.Prima facie evidence of the validity of the mark. While not all marks are created equal, registration indicates that a mark has at least a presumption of distinctiveness and exclusivity. Nationwide priority as of the date of application, rather than the registration date.Registrant’s exclusive right to use the mark in connection...
by Evoke Law | Sep 10, 2019 | Trademark topics, IP points
Below we discuss two significant legal factors that make for a strong trademark: distinctiveness and exclusiveness. 1. DISTINCTIVENESS A mark can be inherently distinctive or it may become distinctive through extensive and continuous use in the market. There are three types of inherently distinctive marks: – Fanciful marks are not actual words, but made-up terms, like ACCENTURE for consulting, EXXON for energy products, STARBUCKS for coffee, PINTEREST for social networking, and LEAFLY for cannabis news source and directory. – Arbitrary marks are real words, but words that have no literal or suggestive meaning connected to the product. Examples include LEAPFROG for educational games, APPLE for computer products, AXE for men’s toiletries, JACK IN THE BOX for fast food, DAWN for cleaning products, and VOLCANO for a vaporizer. – Suggestive marks allude to and indirectly, extrinsically relate to the product. Examples of suggestive marks are CHICKEN OF THE SEA for tuna, DREAM HOTEL for hotels, PEDIGREE for pet food, PRUDENTIAL for insurance services, GREEN BRANCH for banking services, COPPERTONE for sunblock, and SUBLIME for cannabis products. If a mark falls into one of these three categories, it is inherently distinctive and you are off to a good start in developing a strong mark. On the other hand, merely descriptive and geographically descriptive marks are weak marks (legally). Under trademark law, a mark is considered “merely descriptive” if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the relevant goods or services. Merely descriptive marks, e.g., Little Tavern for a restaurant, Bagel Bites for bite sized bagel snacks, which immediately communicate about even a single feature or attribute...
by Evoke Law | Sep 3, 2019 | Trademark topics, IP points, Cannabis, International
By: Carlos Allan Malacara & Felipe Gutierrez Serrano, Panamericana de Patentes y Marcas More than two years have passed since Mexico took the first step in the regulation on the use of cannabis, amending important provisions in the General Health Law and the Federal Criminal Code. This was a pivotal moment and a shift from a prohibitionist system, to a model where effective cannabis regulation could be developed. Such significant changes in the federal laws still required a clear regulatory framework for implementation. Since June 2017, the Ministry of Health was instructed to design and execute public policies aimed at regulating the medicinal use of cannabis, within six months. Attempts have been made, but all have failed, to adequately regulate the use and rules for commercialization of cannabis for medical and scientific research purposes. For instance, in November 2017, Mexico’s Federal Commission for Protection against Health Risks (Cofepris) approved the Regulations of the General Health Law involving Health Control of Cannabis and its Derivatives, which were never published and hence did not enter into force. In October 2018, Cofepris issued Guidelines involving Health Control of Cannabis and its Derivatives, which were in force for a short period of time. However, these guidelines were flawed as they did not follow the legal protocols upon issuance and contravened several other legal bodies so they were finally revoked in March 2019. At the legislative level, eight different bill proposals are currently being discussed in Congress. The initiative presented by the Interior Minister in November 2018, has been well received by many as it balances free market principles but also considers public health concerns...
by Evoke Law | Jun 11, 2019 | Trademark topics, IP points, Evoke Law, Cannabis
Originally posted by Corsearch Establishing Hemp/Cannabis/CBD brands starts with proper trademark research and clearance. As the cannabis industry continues to grow nationally, cannabis operators, whether manufacturers, cultivators, retailers, distributors, etc., have increasing ability to secure trademark protection. In order to avail themselves of such protection, businesses will need to ensure that their brand is: available, registrable, and enforceable. Further, the 2018 Farm Bill legalized the domestic cultivation of hemp, as well as production of hemp-derived CBD products (with some exceptions), which industry experts agree will lead to an explosion of new brands in the marketplace. Over the last two years, Corsearch has developed a new Cannabis Industry Search designed for the unique nuances and considerations in the cannabis industry. Corsearch Account Manager Alyssa Christensen recently asked industry experts Mary Shapiro and Nicole Syzdek at Evoke Law to discuss the current cannabis product marketplace and the importance of and challenges associated with proper clearance for marks. Even though Cannabis and CBD marks are not allowed to be federally registered, can you discuss why you think it is important to clear your client’s possible trademark? Actually, you can register cannabis marks federally. While you cannot register marks for marijuana or marijuana-derived products (meaning, where the THC content is over 0.3%), you can register marks for ancillary services, such as; providing information about cannabis online, offering educational services, and providing advocacy services for legalizing cannabis. However, for hemp-derived cannabis and products (meaning, where the THC content is less than 0.3%), you can register marks for actual cannabis products, including; flower, concentrates, topicals, and more (but not ingestible products such as edibles, tinctures, sublinguals, and supplements, as these violate the Food, Drug, and...
